Case 4:19-cv-02701-HSG Document 32 Filed 08/23/19 Page 1 of 19

1 Victor de Gyarfas (SBN 171950)

email: vdegyarfas@foley.com
2 Foley & Lardner LLP
555 South Flower Street, Suite 3300
3 Los Angeles, CA 90071-2411
Telephone: 213-972-4500
4 Facsimile: 213-486-0065
5
Attorneys for Defendant
6 iTouchless Housewares and Products, Inc.
7

8 UNITED STATES DISTRICT COURT

9 NORTHERN DISTRICT OF CALIFORNIA
10

11 SIMPLEHUMAN, LLC, CASE NO: 4:19-CV-2701-HSG

a California limited liability company,
12 DEFENDANT’S REPLY IN SUPPORT OF
PLAINTIFF, MOTION TO DISMISS AMENDED
13 COMPLAINT DESIGN PATENT CLAIMS
v.
14
ITOUCHLESS HOUSEWARES AND
15 PRODUCTS, INC., a California corporation, Date: October 17, 2019
16 Time: 2:00 p.m.
DEFENDANT. Place: Courtroom 2, 4th Floor
17 Judge: Hon. Haywood S. Gilliam, Jr.

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1 TABLE OF CONTENTS
2 Page
3 I.  INTRODUCTION ....................................................................................................................... 1 
4 II.  PLAINTIFF MISCONSTRUES DEFENDANT’S ARGUMENTS, IGNORES OTHERS,
MAKES INCORRECT STATEMENTS, AND PROVIDES NO JUSTIFICATION TO
5 DENY THE MOTION ................................................................................................................. 2 
6 A.  PLAINTIFF’S FAILURE TO COMPLY WITH MODERN PLEADING
STANDARDS BY FAILING TO INCLUDE ALL RELEVANT VIEWS OF THE
7 ACCUSED PRODUCTS WARRANTS DISMISSAL ................................................... 2 
8 B.  PLAINTIFF FAILS TO CONTRADICT DEFENDANT’S SHOWING THAT
THE DESIGNS ARE NOT SUBSTANTIALLY SIMILAR........................................... 4 
9
1.  The Dual-Deodorizing Open-Top Trash Can Is So Dissimilar
10 From the Claimed Design That The D807 Claim Should Be
Dismissed .......................................................................................................... 4 
11
a.  Side-By-Side Views Demonstrate The Dissimilarity ........................... 4 
12
b.  The Product And Patent Images, Rather Than Plaintiff’s
13 Incorrect Conclusions In Its Pleading, Are The Relevant
Considerations On This Motion............................................................ 4 
14
c.  Plaintiff Misunderstands Design Patent Drawing
15 Conventions .......................................................................................... 6 
16 d.  Plaintiff’s Summary Dismissal Of The Numerous
Significant Differences Between The Patent And Accused
17 Product Is Unavailing ........................................................................... 8 
18 e.  Plaintiff Misunderstands The Use Of Prior Art In The
Design Patent Infringement Analysis ................................................... 9 
19
2.  The Dual-Deodorizing Open-Top Trash Can Is So Dissimilar
20 From the Claimed Design That The D485 Claim Should Be
Dismissed ........................................................................................................ 10 
21
C.  DEFENDANT’S CASES ARE APPOSITE .................................................................. 12 
22
III.  CONCLUSION .......................................................................................................................... 14 
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1 TABLE OF AUTHORITIES
2 Page(s)
3 Federal Cases

4
Anderson v. Kimberly-Clark Corp.,
5 570 Fed. Appx. 927 (Fed. Cir. 2014) ...................................................................................................12

6 Arunachalam v. Apple, Inc.,

No. 5:18-cv-01250-EJD, 2018WL 5023378 (N.D. Cal. Oct. 16, 2018) ................................................2
7
Ashcroft v. Iqbal,
8 556 U.S. 662 (2009) ...............................................................................................................................5
9
Atlas IP LLC v. Pac. Gas & Elec. Co.,
10 No. 15-cv-05469, 2016 WL 1719545 (N.D. Cal. Mar. 9, 2016) ...........................................................3

11 In re Blum,
374 F.2d 904 (C.C.P.A. 1967) ...............................................................................................................7
12
Colida v. Nokia, Inc.,
13 No. 2009-1326, 2009 WL 3172724 (Fed. Cir. Oct. 6, 2009)...............................................................12
14 Conley v. Gibson,

15 335 U.S. 41 (1957) .................................................................................................................................2

16 Crocs, Inc. v. Int’l. Trade Comm’n,

598 F.3d 1294 (Fed. Cir. 2010)..........................................................................................................3, 5
17
e.Digital Corp. v. iBaby Labs, Inc.,
18 No. 15-cv-05790, 2016 WL 4427209 (N.D. Cal. Aug. 22, 2016) .........................................................3
19 Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d F.3d 665, 676 (Fed. Cir. 2008) .........................................................................................9, 10
20

21 Great Neck Saw Mfrs., Inc. v. Star Asia, U.S.A., LLC,

727 F. Supp. 2d 1038 (W.D. Wash. 2010) .............................................................................................4
22
Hall v. Bed Bath & Beyond, Inc.,
23 705 F.3d 1357 (Fed. Cir. 2013)..............................................................................................................2
24 Legler v. Exxel Outdoors,
NO. 13-cv-668, 2014 WL 3727566 (E.D. Wis. July 29, 2014) .....................................................11, 13
25

26 MSA Products v. Nifty Home Products,

883 F. Supp. 2d 535 (D.N.J. 2012) ................................................................................................10, 13
27
OurPet’s Company v. IRIS USA, Inc.,
28 No. 1:14 CV 1642, 2015 WL 12780599 (N.D. Ohio Mar. 23, 2015) ............................................11, 12

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1 Performance Designed Products LLC v. Mad Catz, Inc.,

NO. 16-cv-629-GPC(RBB), 2016 WL 3552063 (S.D. Cal. June 29, 2016)........................................10
2
Phonometrics, Inc., v. Hosp. Franchise Sys., Inc.,
3
203 F.3d 790 (Fed. Cir. 2003)................................................................................................................2
4
Puma SE v. Forever 21, Inc.,
5 Case No. CV17-2523 PSG, 2017 WL 4771004 (C.D. Cal. June 29, 2017) ..........................................2

6 Saverglass, Inc. v. Vitro Packaging, LLC,

130 F. Supp. 3d 747 (E.D.N.Y. 2015) ...................................................................................................6
7
SCG Characters LLC v. Telebrands Corp.,
8
No. CV-15-00374 DDP, 2015 WL 4624200 (C.D. Cal. Aug. 3, 2015)...............................................12
9
Wing Shing Products (BVI) Co. Ltd. v. Sunbeam Products, Inc.,
10 665 F. Supp. 2d 357 (S.D.N.Y. 2009)....................................................................................................9

11 Other Authorities

12 37 C.F.R. 1.84(m) ....................................................................................................................................6, 7

13 MPEP 1503.01 .............................................................................................................................................7
14 Rule 11 .........................................................................................................................................................3
15
USPTO’s Design Patent Application Guide
16 https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-
applications/design-patent-application-guide ........................................................................................6
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1 I. INTRODUCTION
2 Plaintiff concedes key arguments that support Defendant’s Motion to Dismiss. First, Plaintiff
3 does not deny, and concedes the point by failing to address it, that under modern pleading standards,
4 Plaintiff must compare all views of the accused product to the corresponding views of the asserted
5 design patent. Plaintiff, in its second try with the Amended Complaint, failed again to make that
6 comparison as it did not show all views of the accused product. Plaintiff surely knows that such a
7 comparison is impossible to plead because unlike the design patent drawings, the accused product does
8 not have “mirror image” front and rear, and left and right views. Because now, after two tries, Plaintiff
9 cannot properly plead infringement, the complaint should be dismissed with prejudice with respect to
10 the design patents.
11 Second, Defendant identified distinct differences between Defendant’s accused products and
12 Plaintiff’s patents. Faced with no alternative, Plaintiff seeks to dismiss these differences with superficial
13 labels, calling them “minute,” and “minutia.” Yet, it is evident from even a cursory comparison that the
14 overall effect of these differences can lead only to the conclusion that the claimed designs and the
15 accused products are sufficiently distinct such that Plaintiff cannot plausibly state that an ordinary
16 observer would be deceived into believing that the accused products and claimed designs are the same.
17 Third, for the D807 patent, Plaintiff does not deny that the ornamental features of the Accused
18 Product and the Claimed Design are found in the prior art. Plaintiff already conceded to the USPTO that
19 key aspects of its Claimed Design and of the Accused Product are found in the prior art. Plaintiff seeks
20 to ignore this fact, and argues that the Accused Product looks more like the Claimed Design than it does
21 the prior art. That approach has been soundly rejected as the incorrect analytical framework. The issue
22 is not which design is more similar to the other, but rather does the prior art impact the ordinary
23 observer’s perception of the Accused Product and Claimed Design. The answer here is a resounding
24 “yes,” as Plaintiff itself admitted to the USPTO that the most important aspects of its design are in the
25 prior art.
26 Finally, Plaintiff misunderstands design patent drawings. Plaintiff repeatedly, and incorrectly
27 contends that various seam lines are contour lines. The thick, single seam lines in shown in the patent
28 look nothing like contour lines, which are typically multiple, very thin lines. Plaintiff also contends that

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1 a handle is shown in dashed line, and is not appropriate to consider, but Defendant never identified the
2 handle in its analysis. Defendant identified the handle “cutout,” which has a distinct design shape, as
3 shown in solid line, and it is completely appropriate to consider that as a claimed feature of the design.
4 Given the significant dissimilarities between the patents and accused products, the design patent
5 claims should be dismissed.
6 II. PLAINTIFF MISCONSTRUES DEFENDANT’S ARGUMENTS, IGNORES OTHERS,
7 MAKES INCORRECT STATEMENTS, AND PROVIDES NO JUSTIFICATION TO
8 DENY THE MOTION
9 A. PLAINTIFF’S FAILURE TO COMPLY WITH MODERN PLEADING
10 STANDARDS BY FAILING TO INCLUDE ALL RELEVANT VIEWS OF THE
11 ACCUSED PRODUCTS WARRANTS DISMISSAL
12 In the opening brief (pp. 8-11), Defendant explained that with the abolition of Form 18 in
13 December 2015, pre-Iqbal/Twombly pleading standards for patent infringement are no longer
14 appropriate, and pleading of design patent infringement should comply with the same standards as utility
15 patent infringement. That is, pleading patent infringement requires pleading a factual basis for the
16 presence of every limitation. Arunachalam v. Apple, Inc., No. 5:18-cv-01250-EJD, 2018WL 5023378,
17 at *2 (N.D. Cal. Oct. 16, 2018).
18 Plaintiff ignores those cases, and asserts, without addressing Defendant’s arguments, that pre-
19 2015 cases, not applying Iqbal/Twombly, allegedly only require a plaintiff to: “(1) allege ownership of
20 the patent; (2) name each defendant; (3) cite the patent; (4) state the means by which the defendant
21 allegedly infringes; and (5) point to the sections of the patent law invoked.” (Opp. 4) citing Hall v. Bed
22 Bath & Beyond, Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013) and Puma SE v. Forever 21, Inc., Case No.
23 CV17-2523 PSG, 2017 WL 4771004, at *2 (C.D. Cal. June 29, 2017).1
24 What Plaintiff ignores is what it means to “state the means by which the defendant allegedly
25

26 1
Hall relies on language in Phonometrics, Inc., v. Hosp. Franchise Sys., Inc., 203 F.3d 790, 793-
27 94 (Fed. Cir. 2003), which applied the old notice pleading standard from Conley v. Gibson, 335 U.S. 41
(1957), while noting that the appended forms to the Rules were illustrative. After Twombly overruled
28 Conley in 2007 and Form 18 was abrogated in 2015, it necessarily follows that Hall is no longer good
law. Puma simply relies on the outdated Hall. Plaintiff fails to address this argument and thus concedes
it.
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1 infringes.” After the abolition of Form 18, there is no principled basis to contend that the “means by
2 which defendant allegedly infringes” can be less than a factual basis concerning every limitation of the
3 claim, as is the explicit standard applied to utility patents.2
4 Plaintiff also does not dispute that for a design patent, “the proper comparison requires a side-by-
5 side view of the drawings of the [asserted design patent] and the accused products.” Crocs, Inc. v. Int’l.
6 Trade Comm'n, 598 F.3d 1294, 1304 (Fed. Cir. 2010). Plaintiff, however, did not compare all views of
7 the product to the corresponding views of the design patents. Instead, for each of the design patents, the
8 front side is a “mirror image” of the rear, and the right side is a “mirror image” of the left side. The

9 accused products, however, do not have mirror image front and rear, and left and right sides. See Mot.

10 at pp. 15, 16, 23. To avoid making all of the required comparisons, Plaintiff only showed front and right
11 side views, without showing the rear and left side views of the accused products. Plaintiff failed to show
12 all views because Plaintiff knows that it is impossible to plead, consistent with Rule 11, that the accused
13 products have mirror image front and rear, and left and right views. Plaintiff attempts to downplay its
14 failure by asserting: “The Amended Complaint also includes comparisons of each figure from the D807
15 Patent and the corresponding view of the accused Dual-Deodorizer Oval Open-top product.” (Opp. 6).
16 What that statement fails to acknowledge is that Plaintiff failed to show all views of the accused
17 products that correspond to the figures in the D807 Patent. Because Plaintiff did not show all views of
18 the accused products, it did not make the comparison required by Crocs, 598 F.3d at 1304.
19 Indeed, Defendant made the same arguments in the original motion to dismiss, when the
20 complaint showed only a perspective view of each product. Rather than substantively respond to the
21 original motion to dismiss, or address that argument all, Plaintiff amended the complaint to add
22 additional figures of the patent and views of the product, conceding that its original pleading was
23 inadequate.3 But still, Plaintiff failed to include all relevant views of the accused products.
24 Plaintiff also apparently understands that the Iqbal/Twombly pleading standards requiring
25
2
26 See e.g., Atlas IP LLC v. Pac. Gas & Elec. Co., No. 15-cv-05469, 2016 WL 1719545, at *5
(N.D. Cal. Mar. 9, 2016); e.Digital Corp. v. iBaby Labs, Inc., No. 15-cv-05790, 2016 WL 4427209, at
27 *3-4 (N.D.
3
Cal. Aug. 22, 2016).
Ignoring its own concession of the inadequacy of its own original complaint, Plaintiff strangely
28 asserts: “Defendant tacitly concedes that simplehuman’s First Amended Complaint sufficiently pleads
the elements required to allege design patent infringement.” Opp. 6 at lines 15-16. The opposite is true,
as is apparent from the title of the “Motion to Dismiss.”
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1 pleading of all limitations is required for design patents. Defendant explicitly made that argument in the
2 opening brief (pp. 9-10), but Plaintiff did not even address that argument in its Opposition (Opp. 6),
3 thereby conceding it.
4 Here, Plaintiff failed to comply with the Iqbal/Twombly pleading standards when it failed to
5 show all views of the accused products compared to the corresponding view of the design patent.

6 Because Plaintiff, therefore, failed to “state the means by which the defendant allegedly infringes,”
7 Plaintiff’s pleading is inadequate and should be dismissed.
8 Given that Plaintiff has already attempted to remedy this defect once and has established that it
9 cannot, leave to amend would be futile and should be denied. Indeed, Plaintiff did not even request
10 leave to amend if this motion is granted, and leave should not be granted.
11 B. PLAINTIFF FAILS TO CONTRADICT DEFENDANT’S SHOWING THAT THE
12 DESIGNS ARE NOT SUBSTANTIALLY SIMILAR
13 1. The Dual-Deodorizing Open-Top Trash Can Is So Dissimilar From the
14 Claimed Design That The D807 Claim Should Be Dismissed
15 a. Side-By-Side Views Demonstrate The Dissimilarity
16 In the opening brief, Defendant showed all views of the accused product and design patent and
17 pointed out the numerous dissimilarities of the products that lead to the inescapable conclusion that the

18 Accused Product is “plainly dissimilar” from the patented design. No ordinary observer familiar with the
19 prior art would be deceived into believing that the Accused Product is the same. See Great Neck Saw
20 Mfrs., Inc. v. Star Asia, U.S.A., LLC, 727 F. Supp. 2d 1038, 1051 (W.D. Wash. 2010). Plaintiff
21 derisively dismisses that analysis as “manufacturing minute differences.” Opp. 7:14. Plaintiff, itself
22 however, never provides any side-by-side analysis of the alleged similarities of the products. The reason
23 for that failure is that such a comparison starkly shows the contrasts between the design patent and
24 accused product.
25 b. The Product And Patent Images, Rather Than Plaintiff’s Incorrect
26 Conclusions In Its Pleading, Are The Relevant Considerations On
27 This Motion
28 Plaintiff asserts that the words Defendant uses to describe the products are “irrelevant.” Opp.

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1 7:26. While it is true that the proper comparison is all views of the accused product and the
2 corresponding views of the patent, as Defendant provided in the motion, motion practice requires written
3 words to provide a verbal framework for the analysis. Defendant’s words accurately describe and point
4 out the relevant features shown in the figures.
5 After asserting that the words used to describe the product are “irrelevant,” Plaintiff asserts that
6 the word it used in the complaint to describe the accused product, “oval,” is of paramount importance,
7 and that Defendant itself characterized the product as oval in advertising.4 Opp. 8:3-20. Whether
8 Plaintiff characterizes an accused product in a certain way that contradicts reality is not the relevant
9 inquiry on a motion to dismiss. “Threadbare recitals of the elements of a cause of action, supported by
10 mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Instead, “The
11 proper comparison requires a side-by-side view of the drawings of the [asserted design patent] and the
12 accused products.” Crocs, Inc. v. Int’l. Trade Comm'n., 598 F.3d 1294, 1304 (Fed. Cir. 2010). Plaintiff
13 fails to perform such a comparison.
14 The images presented in the amended complaint and the motion, however, demonstrate that the
15 accused product’s shape is not the running track type of “oval” shown in the D807 patent. The accused
16 product is more rectangular than oval. A
17 side-by-side comparison establishes that
18 fact and establishes that the products
19 have such different shapes that no
20 ordinary observer would think the
21 accused product is the same as the
22 patented design.
23 Next, Plaintiff incorrectly asserts
24 that there is a “fact dispute” because its
25 complaint characterizes the accused
26 product as “oval.” Opp. 8:21-22. The
27

28 4
Plaintiff also ignores the fact that the cited advertising describes the product as “flat oval” – not
“oval,” and certainly not the running track oval shape of the patent. Opp. 8:12-17.
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1 relevant fact is not what Plaintiff’s foundationless conclusion is concerning the shape of the accused
2 product. Instead, the relevant facts are the design patent figures and the appearance of the accused
3 product. There is no dispute as to those facts. The case is ripe for dismissal.
4 c. Plaintiff Misunderstands Design Patent Drawing Conventions
5 Next, Plaintiff incorrectly asserts that the seam lines in the drawings are actually “contour lines.”
6 Opp. 8:25-9:20. While it is true that actual contour lines just show the contours of a product, there is no
7 basis to assert or believe that the seam lines shown in the patent are “contour lines.” Regarding lines
8 used to show contours, the Code of Federal Regulations provides: “Spaced lines for shading is
9 preferred” and “[t]hese lines must be thin, as few in number as practicable, and they must contrast with
10 the rest of the drawings.” 37 C.F.R. 1.84(m). The USPTO’s “Design Patent Application Guide” also
11 describes and provides examples of what contour / shading lines are.5 As the USPTO explains, “The
12 two types of shading commonly employed in design patent application drawings are straight-line surface
13 shading and stippling. Individually or in combination, they can effectively represent the character and
14 contour of most surfaces.” Examples of contour lines are also provided, and are similar to the lines
15 shown in the design patent at issue (D526,197) in Plaintiff’s case, Saverglass, Inc. v. Vitro Packaging,

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28 5
See https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-
applications/design-patent-application-guide.
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1 LLC, 130 F. Supp. 3d 747, 753 (E.D.N.Y. 2015):

2 Consistent with 37 C.F.R. 1.84(m), none of those USPTO examples of contour lines are a single,
3 solid, thick black line. Instead, the contour lines in those examples contain multiple thin lines (i.e., side-
4 by-side parallel lines,) showing the curvature or contour of a surface. Those contour lines are in stark
5 contrast to the thicker, solid, single lines
6 used to show boundaries of product
7 surfaces and design features. The seam
8 lines identified are not contour lines.
9 Instead, Plaintiff only uses thick, single,
10 solid lines for the seams, unlike the
11 contour lines shown in the examples
12 above.
13 By contrast to shading / contour
14 lines, the scope of a design includes all that
15 is shown in solid lines. In re Blum, 374
16 F.2d 904, 907 (C.C.P.A. 1967) (discussing “full lines” and stating “A design is a unitary thing and all of
17 its portions are material in that they contribute to the appearance which constitutes the design.”); and
18 MPEP 1503.01 (III) “Full lines in the drawing show the claimed design.”
19 The seam lines in D807 have the same appearance, thickness and continuity that is used for all
20 other lines defining shape or design features asserted by the Plaintiff (e.g., including the lines defining
21 the oval shape that Plaintiff asserts).
22 There is no statement or indication in the D807 patent or prosecution history that notifies the
23 public that those lines are not part of the claimed design. Plaintiff knew that it was required to identify
24 any lines that are not part of the claimed design. Indeed, D807 includes a statement (right after the
25 description of Fig. 5) that “[a]ll features illustrated in phantom line are expressly disclaimed and form no
26 part of the claimed design.” The seam lines, however, are not drawn as phantom lines (i.e., broken or
27 dashed lines) and, instead, are drawn with a single, solid (full) line, just like all over claimed features of
28 the design.

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1 There simply are no contour lines in Plaintiff’s patent and its argument is incorrect.
2 d. Plaintiff’s Summary Dismissal Of The Numerous Significant
3 Differences Between The Patent And Accused Product Is Unavailing
4 Rather than analyze the numerous differences between the patent and accused product Defendant
5 identified, Plaintiff summarily dismisses those differences as “minutia” with no analysis – just an
6 assertion. Opp. 9:21-10:17. Plainly, as shown in detail in the opening brief (pp. 14-18, 21-24), there are
7 numerous differences significant between the patent and accused product. Plaintiff fails to attempt to
8 analyze those differences because it knows they are significant.
9 Plaintiff, in footnote 1 (p. 10) also misunderstands its own drawings. Plaintiff asserts that green
10 circles added to the drawings at Mot. 17 are identifying “unclaimed
11 features,” and asserting that “Defendant points to the dashed lines
12 showing the handle of the claimed design.” Plaintiff is incorrect. The
13 green circles identify non-dashed line (i.e., solid line) features, as shown
14 in the magnified version to the right. While there are numerous dashed
15 lines outside the green circles, the lines inside the green circle are solid,
16 thick, black lines and are not dashed. Those solid lines show a particular design shape. Plaintiff’s
17 argument is incorrect and seeks to hide or ignore claimed design features.
18 With respect to the handle, contrary to Plaintiff’s incorrect argument, Defendant did not identify
19 the “handle” itself as the relevant feature to be compared. Instead, Defendant identified the handle
20 “cutout,” which is explicitly labeled as such at Mot. 15, and which is consistently shown without
21 dashed lines, per the following magnified images:

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10

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Again, Plaintiff makes an extraordinarily incorrect argument that should be rejected.
13
e. Plaintiff Misunderstands The Use Of Prior Art In The Design Patent
14
Infringement Analysis
15
As Defendant explained in the Motion (11:4-13), “When the differences between the claimed
16
and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary
17
observer will be drawn to those aspects of the claimed design that differ from the prior art.”
18
Egyptian Goddess, , Inc. v. Swisa, Inc., 543 F.3d F.3d 665, 676 (Fed. Cir. 2008) (emphasis added).
19
Thus, the comparison is not, as Plaintiff misunderstands, whether the accused product looks closer to the
20
patent than the prior art, in the abstract. (Opp. 2:15-28, 11:1-15). Indeed, Plaintiff’s approach was
21
explicitly rejected in Wing Shing Products (BVI) Co. Ltd. v. Sunbeam Products, Inc., 665 F. Supp. 2d
22
357, 368 (S.D.N.Y. 2009) (“whether the accused device is ‘closer’ to the patented design than to the
23
prior art is not the controlling inquiry.”)
24
Instead, the appropriate focus is on elements of the product that are not shown in the prior art.
25
Plaintiff does not dispute, or even address that it previously admitted to the USPTO that the Hero Bullet
26
prior art “presents an appearance basically the same” as the patented design, including a “domed cover,”
27
“slightly flared band along the perimeter of the base,” and “large aperture centered at the top.” (Mot.
28
5:7-15). The Yang ‘817 prior art has the same running track oval shape as the asserted patent. (Mot.
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1 6:1-12). Under the Egyptian Goddess test, the ordinary observer familiar with the prior art will be
2 drawn to the aspects of the claimed design that differ from the prior art, and will be drawn to features
3 other than the domed cover, band, centered aperture, and running track oval shape. But once the focus is
4 not on those features, there is almost no similarity between the products, as demonstrated in the Motion.
5 Accordingly, the D807 claim for design patent infringement should be dismissed with prejudice.
6 2. The Dual-Deodorizing Open-Top Trash Can Is So Dissimilar From the
7 Claimed Design That The D485 Claim Should Be Dismissed
8 Plaintiff makes a number of incorrect arguments in connection with the D485 patent similar to
9 those it made with the D807 patent.
10 First, Plaintiff asserts, without providing any side-by-side comparison, that there are some
11 similarities between the patent and accused product. Opp. 12:10-19. But many of those alleged
12 similarities do not exist. For example, as explained in at Mot. 21-24: the product does not have all flat
13 side panels; the products have very different proportions; the patent does not have a flat top edge, as the
14 edge is sloped upward; and the cavity shapes are different. Thus, the purported similarities Plaintiff
15 identifies are not similarities at all.
16 Plaintiff then makes the same incorrect contention it made with
17 the D807 patent, that that various single, thick, solid lines Defendant
18 identified as seam lines, are “contour lines.” Opp. 12:20-25. As
19 explained above, contour lines are shown with multiple thin lines (i.e.,
20 parallel, side-by-side lines), and not the single, thick, solid lines
21 Defendant identified for the seams. Plaintiff’s argument is incorrect.
22 Next, Plaintiff asserts that numerous differences Defendant
23 identified are “minute” and should be ignored. Opp. 13:1-13. Again,

24 Plaintiff is mistaken. Plaintiff provides no analysis as to why the numerous differences are “minute,”
25 and the side-by-side analysis of differences is exactly what the design patent test requires, as has been
26 demonstrated in numerous cases dismissing design patent claims. See cases cited at Mot. 11:16-12:4.
27 See also, Performance Designed Products LLC v. Mad Catz, Inc., NO. 16-cv-629-GPC(RBB), 2016 WL
28 3552063, *4-5 (S.D. Cal. June 29, 2016); MSA Products v. Nifty Home Products, 883 F. Supp. 2d 535,

REPLY RE MOT. TO DISMISS COMPLAINT

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1 541 (D.N.J. 2012); Legler v. Exxel Outdoors, NO. 13-cv-668, 2014 WL 3727566, *4 (E.D. Wis. July 29,
2 2014)
3 Indeed, in a closer case than this one, OurPet's Company v. IRIS USA, Inc., No. 1:14 CV 1642,
4 2015 WL 12780599, *3 (N.D. Ohio Mar. 23, 2015), the Court found that a design patent claim alleged
5 against products slightly similar looking to those at issue in this case should be dismissed because: “the
6 shape of the feeding bowls, as well as the shape and contours of the sides, handles, and bottom are all
7 plainly dissimilar (not substantially the same). Thus, even if the facts alleged in the Complaint are true,
8 Plaintiff OurPet’s has failed to state a claim upon which relief may be granted.” The asserted patent and
9 accused product in the OurPet’s case are shown below.
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21 Just as the shape of the bowls was not the same in OurPet’s, the shape of the openings of the

22 trash bins is not the same in this case. Just as the shape and contours of the products were not the same

23 in OurPet’s, the shape and contours of the sides are not the same in this case, given the flat surface in

24 the patent and the non-flat surface incorporating a handle in the product. Just as the bottom was not the

25 same in OurPet’s, the band on the bottom of the accused product and bottom of the product itself are

26 different from the patent in this case. Thus, nearly the same types of differences identified by Defendant

27 in this case were found to be dispositive in OurPet’s. Plaintiff’s argument is incorrect.

28 The D485 patent claim should be dismissed, just like the D807 patent claim.

REPLY RE MOT. TO DISMISS COMPLAINT

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1 C. DEFENDANT’S CASES ARE APPOSITE

2 In the Motion, Defendant cited over 40 cases for various propositions. Plaintiff takes issue with
3 three of those cases at Opp. 13:15-16:4. Defendant cited SCG Characters LLC v. Telebrands Corp., No.
4 CV-15-00374 DDP (AGRx), 2015 WL 4624200, at *5-6 (C.D. Cal. Aug. 3, 2015); Anderson v.
5 Kimberly-Clark Corp., 570 Fed. Appx. 927, 931-34 (Fed. Cir. 2014); and Colida v. Nokia, Inc., No.

6 2009-1326, 2009 WL 3172724, at *2 (Fed. Cir. Oct. 6, 2009) for the proposition that it is appropriate to
7 dismiss a design patent claim at the pleading stage, assuming the patented design is sufficiently distinct
8 from the accused product. Plaintiff does not challenge the proposition for which the cases were cited,
9 and Defendant’s cases are apposite.
10 Instead, Plaintiff asserts, without analysis, that the patents and products in those cases were more
11 dissimilar than the patent and product in this case. That point is irrelevant. If Plaintiff wanted to
12 provide a detailed analysis of the differences and similarities of the patents and products in this case, it
13 should have done so, rather than asserting there were significant differences in other cases.
14 Nevertheless, numerous other cases have found it appropriate to dismiss design patent cases,
15 even when the patent and product were more similar than in this case. The OurPet’s case, discussed
16 above, is one such example.
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REPLY RE MOT. TO DISMISS COMPLAINT

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1 In MSA Products, 883 F. Supp. 2d at 541, the Court dismissed a design patent claim based on a
2 patent and product that appear more similar than the ones in this case:
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15 Further, in Legler, 2014 WL 3727566, *4, the patent looked much closer to the product than the
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Thus, Defendant’s cases are apposite and numerous cases have dismissed design patent claims.
REPLY RE MOT. TO DISMISS COMPLAINT
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1 The fact that Defendant could find one case (Opp. 16) where dismissal was not appropriate in no way
2 undermines the facts, law, or analysis stated in the motion to dismiss.
3 III. CONCLUSION
4 For the foregoing reasons, Plaintiff has not and cannot plead any fact supporting a prima facie
5 infringement claim of the Asserted Design Patents. The design patent claims should be dismissed.
6

7 DATED: August 23, 2019 /s/ Victor de Gyarfas

VICTOR DE GYARFAS
8 FOLEY & LARDNER LLP
Attorneys for Defendant ITOUCHLESS
9 HOUSEWARES AND PRODUCTS, INC.
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REPLY RE MOT. TO DISMISS COMPLAINT

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1 PROOF OF SERVICE Electronic Filing

2 I HEREBY CERTIFY that on August 23, 2019 I electronically filed the foregoing with the Clerk
of Court by using the CM/ECF system which will send a notice of electronic filing to the Electronic
3 Service List for this case.
4
/s/ Victor de Gyarfas
5 Victor de Gyarfas
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